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  • Venue: What Will Bring Certainty?

    Contains 3 Component(s) Includes a Live Event on 02/28/2019 at 2:00 PM (EST)

    This webinar will discuss...


    Speakers:  

    • John Dragseth, Fish & Richardson, P.C.
    • Eileen Hunter, 3M Innovative Properties Co.
    • Charlie McMahon, McDermott Will & Emery

    John Dragseth

    Fish & Richardson, P.C.

    Eileen Hunter

    3M Innovative Properties Co.

    Charlie McMahon

    McDermott Will & Emery

  • Tech Transactions after Helsinn (RECORDING)

    Contains 2 Component(s) Recorded On: 02/13/2019

    This webinar will discuss the Supreme's Court decision last month in Helsinn v. Teva highlights.

    The Supreme Court’s decision last month in Helsinn v. Teva highlights the importance of carefully evaluating the structure of technology-driven investments, joint ventures, joint development agreements, and other supply arrangements to minimize the likelihood that a conditional transaction will be characterized as an offer to sell a later-patented invention. These issues are particularly applicable to companies seeking to invest in the development of emerging technologies (or pharmaceuticals) that are not yet the subject of patent applications, and the attorneys who represent them.

    Through the use of hypotheticals, our panelists will explore the impact of Helsinn and other cases related to the on-sale bar ‒ and provide important takeaways for counsel.

    They will analyze key decisions, including Barry v. Medtronic, a recent Federal Circuit opinion subsequent to Helsinn decision, which addressed both the “public use” and “on-sale” bars. They will also address the en banc Federal Circuit decision in Medicines Company v. Hospira, which may now take on additional importance. In that case, the Federal Circuit held that a supplier’s provision of “manufacturing services” did not invalidate product-by-process claims, overruling earlier decisions "to the extent language in those cases might be viewed as dictating a different result here.” But the opinion added the important caveat that the Court is not creating "a blanket 'supplier exception'.” 

    Our panelists will provide insights on the combined impact of these opinions, as well as practical tips on how to best navigate on-sale bar issues in light of them.

    Speakers:  

    • Jennifer Carnahan, Dow Chemical Company
    • Randall Colson, Haynes and Boone, LLP
    • Robert Isackson, Leason Ellis

    Jennifer Carnahan

    Dow Chemical Company

    is Senior Counsel at The Dow Chemical Co. She advises clients on strategic IP matters including agreements for joint development, licensing and nondisclosure. Additionally, she has global IP responsibility for several Dow businesses, which includes portfolio management, freedom of action assessments, and general counseling.  Earlier she worked as a patent attorney at Shell Oil Co. Jennifer holds a Ph.D. in physical chemistry. She is co-Chair of the IPO Licensing Committee.

    Randall Colson

    Haynes and Boone, LLP

    is the head of the Technology Transactions and Technology M&A Practice Groups at Haynes & Boone. He has extensive experience counseling clients with a myriad of technology and IP-related transactions, including outsourcing, software development and licensing, and cloud computing. Randy represents both providers and customers of these services. He also provides counseling on the use and procurement of patents, and due diligence related to joint ventures. Prior to law school, Randy worked as an electrical engineer designing computer hardware and software.

    Robert Isackson

    Leason Ellis

    Robert Isackson is a partner at Leason Ellis. He has a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues. His practice includes appellate litigation, strategic counseling, providing advice and opinions on freedom to operate and litigation risks, and IP transactions. He is a member of IPO’s Trade Secrets and Amicus Brief Committees and was the author of IPO’s amicus brief to the U.S. Supreme Court in Helsinn.

  • Summary Judgment After Berkheimer

    Contains 7 Component(s), up to 1.20 CLE credit hours Recorded On: 01/31/2019

    This webinar will examine what’s been happening at district courts since Berkheimer v HP Inc., the early 2018 Federal Circuit decision indicating that the determination of patent eligibility under section 101 is ultimately a question of law, but may have factual underpinnings.

    This webinar will examine what’s been happening at district courts since Berkheimer v HP Inc., the early 2018 Federal Circuit decision indicating that the determination of patent eligibility under section 101 is ultimately a question of law, but may have factual underpinnings.  Our expert panel of veteran litigators will extract lessons for both plaintiffs and defendants.

    Berkheimer has had an extensive reach.  In the months since it was decided, more than fifty-five district court opinions have cited it – with divergent outcomes.  District courts remain willing to invalidate patents under section 101 at the summary judgment or motion to dismiss stage.  They have also denied summary judgment or a motion to dismiss on a section 101 challenge, pending consideration of additional evidence outside the scope of the pleadings.

    This is the confusing landscape in which litigators must operate today and for at least the immediate future.  HP has filed a petition for certiorari to the U.S. Supreme Court.  Yet, even if cert. is granted to HP, a Supreme Court decision is still a long way off.

    Our panelists will consider and analyze:

    • Cases referencing Berkheimer where early 35 U.S.C. § 101 challenges were granted, such as iSentium v. Bloomberg Fin. (S.D.N.Y.)
    • Finjan, Inc. v. Juniper Network, Inc. (N.D. Cal.), where the court ordered the section 101 invalidity defense be decided at trial, but the ultimate jury instructions and verdict form did not address Section 101
    • Data Engine v. Google (D.Del), where the court granted a motion for judgment on the pleadings, but was reversed-in-part by the Federal Circuit
    • When, in trial proceedings, it’s best to pose, or to resist, a § 101 challenge
    • The distinctive approach taken by some judges in the Eastern District of Texas

    Speakers:  

    • Christopher Hughes, Cadwalader, Wickersham & Taft LLP
    • Frank Nuzzi, Siemens Corp.
    • Jonathan Waldrop, Kasowitz Benson Torres & Friedman, LLP

    Christopher Hughes

    Cadwalader, Wickersham & Taft LLP

     is a Senior Counsel at Cadwalader Wickersham & Taft and head of its IP Group.  Chris has more than 40 years of experience in complex patent litigations and trials in district courts and at the ITC, as well as in arbitrations, and has served as a special master. He has represented clients in several successful motions for summary judgment.

    Frank Nuzzi

    Siemens Corp.

    is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. He manages simple and complex U.S. patent litigation for Siemens. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance.

    Jonathan Waldrop

    Kasowitz Benson Torres & Friedman, LLP

    a patent litigator and managing partner of the Silicon Valley office of Kasowitz Benson Torres LLP, represents industry-leading companies such as Google, Uber and Adobe. He helped Google secure a complete dismissal on 101 grounds in a six-patent infringement case brought by Data Engine Technologies in the District of Delaware. That decision was later overturned by the Federal Circuit.

  • Section 101: Revised USPTO Guidance on Patent Eligibilty

    Contains 2 Component(s) Recorded On: 01/23/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    This webinar features the USPTO’s Deputy Commissioner for Patent Examination Policy, a top in-house counsel, and an experienced patent prosecutor.  They will analyze the USPTO’s revised guidance on patent eligibility that was issued earlier this month ‒ and discuss how the Office is expected apply the U.S. Supreme Court’s Alice/Mayo test for subject matter eligibility going forward.

    The new guidance supersedes conflicting sections in the Manual of Patent Examining Procedure, prior guidance, and prior memoranda.  The panel will elucidate the key ways the new guidance is expected to impact criteria and procedures.  In addition, the panel will explore:

    • What some see as remaining ambiguities in the guidance, such as the determination of what constitutes a “practical application”
    • Arguments that could be made to examiners based on the new guidance
    • How to best make a request to file supplemental briefing to show how claims are compliant with the new guidance
    • The challenges the USPTO faces in interpreting Federal Circuit case law on this topic

    Speakers:  

    • Robert Bahr, U.S. Patent & Trademark Office 
    • Gary Ganzi, Evoqua Water Technologies
    • Michelle Holoubek, Sterne, Kessler, Goldstein & Fox, PLLC

    Robert Bahr

    U.S. Patent & Trademark Office

    is Deputy Commissioner for Patent Examination Policy at the USPTO,
    overseeing examining practice and procedure and establishing patent examination
    and documentation policy standards for the Commissioner for Patents. Prior to
    his current position, Mr. Bahr served as the Senior Patent Counsel to the
    Deputy Commissioner for Patent Examination Policy, where he was involved in
    virtually every patents-related rulemaking since 1995. He began his career at
    the USPTO in 1984 as a patent examiner.

    Gary Ganzi

    Evoqua Water Technologies LLC

    is Senior Counsel and Head of Intellectual Property for Evoqua Water Technologies, as he was for its corporate predecessor Siemens Water Technologies.  He is named as an inventor on 35 U.S. patents in fields related to water treatment.  Gary serves on the Board of Directors of IPO and as board liaison of the IPO U.S. Patent Office Practice Committee.

    Michelle Holoubek

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a Director in the Electronics Group at Sterne Kessler Goldstein &
    Fox. She has handled hundreds of software and business method applications at
    the USPTO. Patent-eligible subject matter is her special area of expertise. In
    addition to the preparation and prosecution of patents, she has been lead
    counsel in IPRs, CBMs, and reexaminations for both patent owners and
    challengers.

  • Extraterritorial Liability: Spotlight After WesternGeco

    Contains 2 Component(s) Recorded On: 01/17/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.

    Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.

    This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America. That case challenges the holding inTransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.

    Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will also analyze relevant case law at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:

    • Halo v. Pulse (Fed. Circ. 2014)
    • NTP v. Rim (Fed. Circ. 2005)
    • Microsoft v. AT&T (S. Ct. 2007)
    • Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
    • Life Technologies v. Promega (S. Ct. 2017)

    Speakers:  

    • Danielle Joy Healey, Fish & Richardson, PC 
    • Prof. Timothy Holbrook, Emory University School of Law 
    • Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP

    Danielle (DJ) Healey

    Fish & Richardson, PC

    is a Senior Principal at Fish & Richardson, PC. A patent litigator,
    DJ has tried cases in the federal courts, ITC, and various arbitration venues.
    She has argued appeals before the Federal Circuit, Fourth Circuit,
    and Fifth Circuit, and has planned and executed multi-jurisdictional
    strategies involving courts and government agencies in the U.S. and Europe. She
    also serves as an arbitrator and mediator. She is the author of the recent
    article “Patent Infringement Liability
    for Extraterritorial Acts” 
    and was one of the attorneys for
    ION Geophysical in the Supreme Court.

    Timothy Holbrook

    Emory University School of Law

    is a professor at the Emory University School of Law, as well as the University’s vice provost for faculty affairs. A leading patent law scholar,
    his work has been cited in briefs before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit itself has cited his work. He is the author of “Boundaries, Extraterritoriality, and Patent Infringement Damages” as well as the forthcoming “Extraterritoriality and Proximate Cause after WesternGeco.”

    Thomas Saunders

    Wilmer Cutler Pickering Hale and Dorr, LLP

    is a partner, appellate advocate, and litigator at Wilmer Cutler Pickering Hale and Dorr LLP. His practice focuses on IP. In addition to having won several cases at the Federal Circuit, Tom argued and won Kimble v. Marvel Enterprises, Inc.,(S. Ct. 2015), a case about collection of royalties after patent expiration,and was part of the team representing Promega in Life Technologies v. Promega at both the Federal Circuit and the Supreme Court. Tom served as a clerk to the Hon. Ruth Bader Ginsburg of the U.S. Supreme Court.

  • Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors and Patent Owners Need to Know

    Contains 2 Component(s) Recorded On: 01/10/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO.

    Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year.

    This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss:

    • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.
    • Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO
    • The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative
    • Approaches that may be taken by defendants’ experts at trial
    • The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel

    Speakers:

    • David Hricik, Mercer University School of Law
    • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
    • Rohit Singla, Munger, Tolles & Olson LLP

    David Hricik

    Mercer University School of Law

    is a professor at Mercer University School of Law, where he teaches legal ethics, patent law, and federal civil procedure.  In 2012-13, he served as a law clerk to Chief Judge Randall Rader at the Federal Circuit. He also is counsel at Taylor English Duma, LLP, where represents clients in patent cases and other complex types of litigation. David has authored a treatise on ethical issues in patent litigation and co-authored a treatise on ethical issues in patent prosecution.

    Kevin Noonan

    McDonnell Boehnen Hulbert & Berghoff LLP

    is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and chair of its Biotechnology & Pharmaceuticals Practice Group. A Ph.D. in molecular biology, Kevin’s practice involves all aspects of patent prosecution and litigation. He is a founding author of the Patent Docs blog. Kevin authored an amicus brief in favor of Regeneron’s petition for certiorari to the U.S. Supreme Court.

    Rohit Singla

    Munger, Tolles & Olson LLP

    is a litigation partner at Munger, Tolles & Olson LLP who focuses on antitrust and IP disputes in high tech industries. Rohit clerked for Judge Alfred Goodwin of the U.S. Court of Appeals for the Ninth Circuit. He has argued cases in the Ninth, Eleventh, and Federal Circuits. As lead appellate counsel for TheraSense, he persuaded the Federal Circuit to accept TheraSense v. Becton Dickinson for en banc review.

  • International Post Grant Practice: Strategic Considerations Before the USPTO, EPO and CNIPA

    Contains 2 Component(s) Recorded On: 01/03/2019

    This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.

    This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.  It will also review effective defensive strategies for patent owners, both in patent drafting and in litigation.  With U.S. inter partes reviews (IPRs) and post-grant reviews (PGRs) under the AIA, U.S. post-grant practice has joined European Patent Office opposition as a key component of global IP strategy.  Meanwhile, interest in China as a venue for patent litigation continues to grow.

    Coordinating post-grant challenges overseas effectively requires a detailed understanding of the variations between systems.  For instance, some have noted that in Europe and China, opposition can be used with little risk as a testing ground for the presentation of arguments that could be used in litigation.  But a substantial limitation of an EPO opposition is that it must be filed within 6 months of a patent being granted.  By contrast, in China, a petition to invalidate a patent can be brought at any time after grant. 

    Our expert panel includes an in-house counsel who oversees post-grant challenges at a U.S. technology company, a European patent attorney who often practices before the EPO, and a Chinese patent attorney with varied experience before SIPO (now known as the China National Intellectual Property Administration or “CNIPA”).  They will discuss:

    • Considerations in deciding where to bring an overseas challenge ‒ and in what order proceedings should be brought
    • Monitoring competitors’ patent issuance, internal product launch considerations, and the desire for freedom to operate
    • The potential ramifications of translation errors in Chinese patents
    • The impact of shrinking patent pendency at the EPO
    • Specific techniques for strengthening patents against post-grant challenges in each jurisdiction

    Speakers:

    • Stephen Bauer, Medtronic Inc.
    • James Denness, Abel & Imray
    • Toby Mak, Tee & Howe Intellectual Property Attorneys

    Stephen Bauer

    Medtronic, Inc.

    is Senior Director of IP at Medtronic, where he has taken on growing responsibilities over 18 years.  In his present role, Steve is responsible for international IP and a range of strategic projects and initiatives.  Steve has closely managed numerous European oppositions and, as a member of a small team, has been involved with numerous IPR petitions, as well as preparation for oral arguments.  Previously, he worked at 3M.  Steve is co-chair of IPO’s International Patent Law & Trade committee.

    James Denness

    Abel & Imray

    is a partner at Abel & Imray, an IP law firm based in the United Kingdom, where he leads the oppositions practice group. He is very experienced in patent prosecution work in the European Patent Office, in the U.K., and overseas. Jim has a significant case load of opposition and appeals work at the EPO, including cases involving related litigation in national courts. Jim holds a Ph.D. in Chemistry and is a member of IPO’s European Practice Committee.  He worked with senior EPO staff to present a workshop on opposition procedure at the 2017 IPO-EPO day.

    Toby Mak

    Tee & Howe Intellectual Property Attorneys

    is a patent attorney at the Beijing-based IP law firm Tee & Howe.  He has substantial experience in both contentious and non-contentious matters, including those relating to prosecution, invalidation, and enforcement.  He is one of the authors of "Patent Law in Greater China," published with the EPO. He has a Ph.D. in Chemistry and has served many clients in different technical fields including power tools, semiconductors, adhesives, and video-on-demand. He is a member of IPO’s Asian Practice committee.

  • Diversity and Implicit Bias: How Barriers Can Be Broken Down?

    Contains 2 Component(s) Recorded On: 12/18/2018

    This webinar is hosted by IPO’s Women in IP Committee on diversity and implicit bias. Implicit bias in the workplace can be a barrier that not only prevents people from working together effectively, but also damages the development of inclusive relationships that foster creative and innovative ideas

    Bias is a prejudice all human beings possess. This prejudice is in favor of or against one thing, person, or group compared with another, usually in a way that is considered to be unfair.

    Implicit bias in the workplace can be a barrier that not only prevents people from working together effectively, but also damages the development of inclusive relationships that foster creative and innovative ideas. These barriers directly impact diversity by affecting both hiring practices and retention rates.

    The negative impact on diversity is a serious ongoing issue in the legal profession. Hard evidence supports positive economic impact of a diverse workforce within a company or any organization, including increased revenue and market share, and reduced turnover and legal costs. 

    The panelists on this webinar will discuss these issues, including:

    • How biases may be held by an individual, group, or institution
    • The consequences of bias
    • The two main types of biases - conscious bias (also known as explicit bias) and unconscious bias (also known as implicit bias)
    • How human beings naturally assign people into various social categories divided by salient and chronically accessible traits on the basis of implicit bias
    • De-biasing techniques including practical tips for legal and business professionals

    Speakers:

    • Shruti Costales, HP Inc.
    • Andrea ("Andie") Kramer, McDermott Will & Emery LLP 
    • Bismarck Myrick, U.S. Patent and Trademark Office

    Shruti Costales

    HP Inc.

    is Patent Counsel at HP Inc. with over fifteen years of experience in patent application preparation, patent application prosecution, patent counseling, transactional matters, and litigation matters. Prior to being at HP Inc., Shruti was in private practice for about thirteen years with a mid-sized law firm and two patent boutiques. She also successfully founded and ran her own patent boutique for over six years. She is also a former patent examiner in the polymers and fuels technology areas. Shruti is Co-Chair of the Intellectual Property Owners Association’s Women in IP Committee and she is the Co-Chair of the Diversity Committee for the PTAB Bar Association

    Andrea Kramer

    McDermott Will & Emory LLP

    a partner in the international law firm McDermott Will & Emery LLP.  She has mentored thousands of women and written hundreds of articles and blog posts on gender biases.  Andie co-founded the Women’s Leadership and Mentoring Alliance (WLMA) to recruit senior women to mentor and support younger women.  She has developed a series of leadership training programs and is a frequent speaker on the issue of gender discrimination and bias.  She is the co-author, with her husband, Al Harris, of “Breaking Through Bias: Communication Techniques for Women to Succeed at Work.”  Their second book, “It’s Not Us, It’s the Workplace: Overcoming Women v. Women Conflict and the Bias that Built It” is due out in the fall of 2019. 

    Bismarck Myrick

    U.S. Patent & Trademark Office

    became the Director of the Office of Equal Employment Opportunity and Diversity at the U.S. Patent and Trademark Office in July 2008.  From 2003 to 2008, Mr. Myrick was the Deputy Director of that Office.  Prior to joining the USPTO, Mr. Myrick worked as an appellate review attorney in Office of Federal Operations at the U.S. Equal Employment Opportunity Commission from 1999 to 2003.  Prior to working at the EEOC, Mr. Myrick worked as a trial attorney for the City of Baltimore, Maryland.  Mr. Myrick is member of the Senior Executive Service.

  • Enforcing Patents: Global Strategies and Tactics

    Contains 2 Component(s) Recorded On: 12/13/2018

    learn about patent owners with international patent portfolios who have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S.

    Considering the invalidation risk of AIA post-grant proceedings, the uncertainty about patent eligibility after the Alice and Mayo U.S. Supreme Court decisions, as well as the difficulty in getting an injunction after eBay, many experts have concluded that successfully enforcing a patent in the U.S. is a much harder task than it was a dozen years ago.

    Some patent owners with international patent portfolios have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S. This shift has seemingly contributed to a documented spike in patent cases filed in EU countries, most of them in Germany. 

    This webinar features a U.S.-based IP executive who has carried out a successful patent enforcement campaign in Europe, a litigator based in Silicon Valley with experience in European courts on behalf of U.S. clients, and a leading German patent litigator with many multinational clients. Drawing on their first-hand experiences, they will discuss:

    • The decisions necessary before launching foreign litigation
    • Important differences between legal systems
    • Using foreign litigation to encourage global settlement
    • The reality of what it takes to enforce an injunction in Germany
    • Whether European decisions make any impact on U.S. courts
    • The risk that foreign litigation could backfire in the U.S.

    Speakers:

    Steven Carlson, Robins Kaplan LLP
    Johannes Heselberger, Bardehle Pagenberg Partnerschaft MbB
    Boris Teksler, Conversant Intellectual Property Management

    Steven Carlson

    Robins Kaplan LLP

    is a partner at Robins Kaplan. An IP litigator, Steve draws upon national and international experience to assist clients with patent disputes involving many technologies. He is the co-author of “Patents in Germany and Europe: Procurement, Enforcement and Defense” and a co-author of the “Patent Case Management Judicial Guide,” a publication of the Federal Judicial Center that is distributed as a resource to U.S. federal judges.

    Johannes Heselberger

    Bardehle Pagenberg Partnerschaft MbB

    is co-head of the Patent Litigation Group at Bardehle Pagenberg, a Munich-based firm. He leads patent infringement and validity litigations, including opposition and appeal proceedings before the German Patent and Trademark Office and the European Patent Office, as well as nullity proceedings before German courts. Johannes has successfully conducted patent infringement proceedings across national borders for clients who are world leaders in their fields of technology.

    Boris Teksler

    Conversant Intellectual Property Management Inc.

    is president, CEO, and a director of Conversant Intellectual Property Management, an IP management and licensing company specializing in semiconductors and communications. Before joining Conversant, Boris was CEO of Unwired Planet, where he launched a successful litigation campaign in the U.K. and Germany. Previously, he was senior executive vice president and president of the technology business group at Technicolor, and head of patent licensing and strategy for Apple. He spent 16 years at Hewlett-Packard.

  • FRAND: The Latest Developments and Predicting the Future SEP Landscape

    Contains 2 Component(s) Recorded On: 12/06/2018

    This webinar will balance between patent owners and implementers discuss the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere.

    In recent months, case law is continuing to develop in the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere.

    In November, the U.S. District Court for the Northern District of California issued an order granting in part the FTC’s bid for summary judgment in its unfair competition case involving Qualcomm. The order addressed the issue of whether, under industry agreements to license SEPs at rates that are fair, reasonable, and nondiscriminatory (FRAND), Qualcomm had to license its essential patents to competing modem chip suppliers.

    Unwired Planet International Ltd. v. Huawei Technologies Co. Ltd. is another decision some experts view as having wide implications.  In October, the Court of Appeal of England and Wales issued its much-anticipated ruling, finding Huawei may be barred from selling its smartphones in the U.K. if it refuses to pay a global license fee for Unwired Planet’s technology.  The Court also rejected Huawei's suggestion that the license Unwired Planet offered was not on "nondiscriminatory terms" because the royalty rate was higher than that which Unwired Planet previously agreed to with Samsung.  The judgment could impact not only the terms of future licenses, but also the way that parties negotiate licenses and make offers to SEP owners.

    Our panelists, which include lawyers who represent both SEP owners and implementers, will discuss:

    • Whether global licenses will come to dominate FRAND negotiations in the future
    • If there is any consensus emerging on how to calculate license terms that are fair, reasonable, and nondiscriminatory for SEP patents
    • The strengths and weaknesses of the differing valuation approaches of TCL and Unwired Planet 
    • The impact of the availability of injunctions for the infringement of a SEP in Europe and China on litigation strategy  

    Speakers:

    Logan Breed, Hogan Lovells LLP
    David Djavaherian, PacTech Law
    Matteo Sabattini, Ericsson

    Logan Breed

    Hogan Lovells LLP

    is a partner at Hogan Lovells LLP who focuses on antitrust law.  He has particular experience with issues at the intersection of antitrust and intellectual property law, as well as mergers and acquisitions.

    David Djavaherian

    PacTech Law

    is the founder of PacTech Law, a firm that focuses on patent, standards, policy, and RAND licensing matters. Similar to his prior in-house work, Dave leads international patent policy efforts and international standards setting organization engagement for clients, with particular focus on RAND licensing issues and obligations.  A former Associate General Counsel at Broadcom, Dave leads SEP patent and technology licensing negotiations for clients.

    Matteo Sabattini

    Ericsson

    Is the director of IP Policy at Ericsson. Before joining Ericsson’s policy team, Matteo served as the CTO of the Sisvel Group and CEO of Sisvel Technology, a subsidiary dedicated to technical support and R&D. In addition to defining technical strategies, Matteo established and led Sisvel’s activities in IPR policy and advocacy. Previously, he worked at Interdigital and in academia. He holds both a Ph.D. in electrical engineering and an MBA.